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URL: http://www.bailii.org/uk/cases/DRS/2003/1058.html
Cite as: [2003] DRS 1058

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Thomas Cook UK Limited -v- Gibson Morgan Hall

Nominet UK Dispute Resolution Service

DRS 01058

Thomas Cook UK Limited -v- Gibson Morgan Hall

Decision of Independent Expert

1. Parties:

Complainant: Thomas Cook UK Limited
Country: GB

Respondent: Gibson Morgan Hall
Country: GB

2. Domain Name:

club1830reunited.co.uk ("the Domain Name")

3. Procedural Background:

The Complaint was received by Nominet on 13 June 2003. Nominet validated the Complaint and sent a copy to the Respondent on 17 June 2003.

No Response was lodged by the Respondent.

On 21 July 2003 the Complainant paid Nominet the required fee for a decision of an Expert pursuant to paragraph 6 of the Nominet UK Dispute Resolution Service Policy ("the Policy").

Nominet invited the undersigned, Jason Rawkins ("the Expert"), to provide a decision on this case and, following confirmation to Nominet that the Expert knew of no reason why he could not properly accept the invitation to act in this case and of no matters which ought to be drawn to the attention of the parties which might appear to call into question his independence and/or impartiality, Nominet duly appointed the undersigned as the Expert with effect from 28 July 2003.

4. The Facts:

The Complainant is the well-known travel services company. It owns a number of UK trade mark registrations for the mark CLUB 18-30.

On 26 November 2002 the Respondent registered the Domain Name.

5. The Parties' Contentions:

Complainant:

In summary, the Complainant's submissions are as follows:

1. The Complainant has rights in a name and trade mark which is similar to the Domain Name:

(1) The Complainant is the proprietor of numerous registered trade marks in the UK for the mark CLUB 18-30. It has used the trade mark CLUB 18-30 in the UK since 1965 and, as a consequence of substantial turnover and advertising, has established a goodwill and reputation (and therefore unregistered rights) in the name CLUB 18-30. In addition, the Complainant trades from a website at www.club18-30.co.uk using its CLUB 18-30 trade mark.

(2) The CLUB 18-30 name/mark is similar to the Domain Name. The removal of the hyphen between "18" and "30" is of no effect; and the word "reunited" is merely descriptive and insufficiently distinctive to make the Domain Name distinguishable from the Complainant's name/mark.

2. The Domain Name is an Abusive Registration in the hands of the Respondent:

(1) The Complainant has not licensed or otherwise permitted or authorised the Respondent to use its trade mark or to apply for a domain name incorporating it. The Respondent has no rights or legitimate interests in respect of the Domain Name. The Respondent's purported intention to set up a website to enable individuals who have taken holidays with Club 18-30 to locate and contact friends whom they met on holiday (as referred to by the Respondent's solicitors in earlier correspondence with the Complainant's solicitors) is not sufficient for it to claim a legitimate interest.

(2) The Respondent deliberately chose to take advantage of the reputation and goodwill established in the CLUB 18-30 trade mark since the Respondent has stated (in earlier correspondence from the Respondent's solicitors) that its proposed website recognised the popularity of the holidays run by the Complainant under the CLUB 18-30 brand. The Respondent has provided no valid reason why it chose to limit the proposed website (at the Domain Name) to Club 18-30 holidays, and not holidays in general or by a generic grouping, such as destinations. The Respondent could provide the same content without taking unfair advantage of the Complainant's reputation and goodwill in the mark CLUB 18-30. If the Domain Name was to be used as a forum for friends who met on holiday, it would have been appropriate to call the planned website "holidaysreunited.com" or "vacationsreunited.com".

(3) The registration of the Domain Name is an abusive registration in that the Respondent has no legitimate reason for registering the Domain Name and deliberately chose to register a domain name incorporating the Complainant's trade mark, as opposed to using a name which reflected the Respondent's stated intention for a website without being unfairly detrimental to the Complainant.

(4) The Complainant runs its own "reunited" site from a website at www.club18-30reunited.co.uk. The Complainant registered the domain name "club18-30reunited.co.uk" on 3 September 2002, nearly three months before the Respondent registered the Domain Name. Therefore the Respondent had constructive knowledge of the Complainant's website.

(5) A website with an identical aim to that of the Complainant's www.club18-30reunited.co.uk site and operating by reference to the Domain Name (which is almost identical to the Complainant's own "reunited" website domain name) would create a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation or endorsement for such website or products or services at that website. The Respondent purchased the Domain Name to attract for financial gain Internet users to the Respondent's planned website. Such registration takes unfair advantage of or is unfairly detrimental to the Complainant's rights. Furthermore visitors searching for the Complainant's own "reunited" website may be directed to the Respondent's site and be confused into believing that the site is connected with the Complainant.

(6) The Complainant would have no control or input over a website run at the Domain Name, nor would it be able to ensure that it met the Complainant's own high standards.

(7) The registration of the Domain Name by the Respondent prevents the Complainant from registering and using the Domain Name itself, or pointing it to the Complainant's current "reunited" site. The Respondent was aware of the success of the CLUB 18-30 brand. It could also have found out from a search that the Complainant was running its own "reunited" site. By registering the Domain Name, the respondent decided to block registration of that domain name which was likely to become desirable for use by the Complainant.

(8) Anyone accessing the Domain Name would reasonably expect the company offering services at the website to be either the Complainant itself or a commercially connected undertaking, contrary to the facts. The Respondent is unfairly disrupting the business of the Complainant because it has simply added the word "reunited" to the Complainant's trade mark, such word being merely descriptive and not a trade mark in its own right.

Respondent:

The Respondent has not filed a Response.

6. Discussion and Findings:

No Response
The Respondent has not filed any Response. In spite of this, it is still for the Complainant to prove its case on the balance of probabilities.
General
Paragraph 2 of the Policy provides that, to be successful, the Complainant must prove on the balance of probabilities that:
i it has Rights in respect of a name or mark which is identical or similar to the Domain Name; and

ii the Domain Name, in the hands of the Respondent, is an Abusive Registration (as defined in paragraph 1 of the Policy).

Complainant's Rights

The Complainant owns several UK trade mark registrations for various forms of the CLUB 18-30 mark, including registrations covering the words per se (i.e. without any stylisation or logo additions). The Complainant has also made substantial use of the CLUB 18-30 brand for many years, and has clearly established extensive (and protectable) goodwill in the brand. I therefore find that the Complainant has Rights in the name and trade mark CLUB 18-30.

Comparing the Domain Name with the Complainant's CLUB 18-30 trade mark, there are two differences, the omission of the hyphen between "18" and "30" and the addition of the word "reunited". The omission of the hyphen is a negligible difference and can be disregarded. The word "reunited" is descriptive and does not in my view serve to distinguish the Domain Name from the Complainant's trade mark. Overall, I therefore find that the Domain Name is similar to the Complainant's trade mark.

The Complainant has therefore proved what is required under the first part of paragraph 2 of the Policy.

Abusive Registration

Paragraph 1 of the Policy defines an "Abusive Registration" as:

"A Domain Name which either:
i was registered or otherwise acquired in a manner which, at the time when the registration or acquisition took place, took unfair advantage of or was unfairly detrimental to the Complainant's Rights; OR
ii has been used in a manner which took unfair advantage of or was unfairly detrimental to the Complainant's Rights."

From the prior correspondence between the parties' solicitors, copies of which are annexed to the Complaint, it is apparent that the Respondent intends to use the Domain Name in order to provide a forum for re-uniting past customers of the Complainant who have been on Club 18-30 holidays. Given this intention, there is little doubt that the "club1830" element in the Domain Name will have an attractive force in bringing visitors to such a website, given that CLUB 18-30 is a well-known brand name.

The issue is whether the advantage of such attractive force is fair or unfair. An argument for it being fair is that the inclusion of "Club1830" in the Domain Name is doing no more than simply referring to the Complainant's Club 18-30 holidays and that the Respondent's proposed website is aimed at people who have been on those holidays. Following this line, the argument is that no-one is being misled because "club1830" is being used simply to refer to the Complainant's own CLUB 18-30 brand. The Complainant's counter-argument to this is that the attractive advantage gained is unfair because the inclusion of "club1830" in a website address of the Domain Name will mislead people into believing that the site is owned by the Complainant or connected or authorised by them in some way, when this is not the case.

In my view, the latter argument is the correct one. There are other ways in which the Respondent could have achieved the same aim, but without encroaching on the rights of the Complainant. For example, the Respondent could have called its planned website "holidaysreunited.com" (as suggested by the Complainant). Within a website of such an address, there are a number of ways in which one could still achieve the desired result of individuals who have been on Club 18-30 holidays seeking to re-unite themselves with people they met on those holidays. For example, one could have a simple registration page where the person wishing to use the website enters his name and address details and then has fields to complete which include the type of holiday (e.g. Club 18-30), the location, and date; thereby allowing other people accessing the site to find that person by way of an appropriately framed search. This is similar to how the "friendsreunited.co.uk" website operates, save that one would be entering the type of holiday and possibly its location in place of the school which one attended.

In the light of the above, I find that the Respondent's registration of the Domain Name took unfair advantage of the Complainant's Rights. In addition, since I am of the view that the use of the Domain Name for a website would cause people mistakenly to believe the website to be owned by the Complainant, or else in some way connected with or authorised by it, I find that the inability of the Complainant to control how its brand name is used is unfairly detrimental to its Rights.

It should also be noted that the Complainant itself runs a "reunited" website relating to its Club 18-30 holidays from the website www.club18-30reunited.co.uk; and that it registered the domain name "club18-30reunited.co.uk" nearly three months before the date on which the Respondent registered the Domain Name. I am of the view that, on the balance of probabilities, the Respondent was aware of this domain name registration by the Complainant when it registered the Domain Name. I say this because, if it had a completely free choice, one would expect someone in the position of the Respondent to have had a preference for "club18-30reunited.co.uk" over "club1830reunited.co.uk" since the hyphenated version more accurately reflects the Complainant's CLUB 18-30 brand name. Because of this, I find on the balance of probabilities that the Respondent would first have sought to register "club18-30reunited.co.uk" and would therefore have seen that this domain name was already registered by the Complainant. These findings reinforce the conclusion that the registration of the Domain Name took unfair advantage of and/or was unfairly detrimental to the Complainant's Rights.

7. Decision:

Having found that the Complainant has Rights in respect of a name or mark which is similar to the Domain Name and that the Domain Name, in the hands of the Respondent, is an Abusive Registration, the Expert directs that the Domain Name, club1830reunited.co.uk, be transferred to the Complainant.

Jason Rawkins

Date: 1 August 2003